ProMark Brands Inc.v.Schwan’s IP LLP

Trademark Trial and Appeal Board

Aug 17, 2007

No. 91159653 (T.T.A.B. Aug. 17, 2007)

Hearing: Mailed:
April 26, 2007 August 17, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

ProMark Brands Inc.

v.

Schwan’s IP LLP
_____

Opposition No. 91159653
to application Serial No. 76402450
filed on May 1, 2002
_____

Thomas H. Curtin and Gianfranco Mitrione of Lathrop & Gage
L.C. for ProMark Brands Inc.

Scott W. Johnston and Gregory C. Golla of Merchant & Gould
P.C. for Schwan’s IP LLP
______

Before Seeherman, Kuhlke and Cataldo, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

ProMark Brands Inc. has opposed the application of
Schwan’s IP LLP to register SMARTPIZZA for pizza.1 As
grounds for opposition, opposer has alleged that, since
prior to applicant’s claimed date of first use, opposer and

1 Application Serial No. 76402450, filed May 1, 2002, asserting
first use and first use in commerce on February 23, 2001.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91159653
2
its predecessors and licensee have sold a variety of food
products, including frozen entrees, under the mark SMART
ONES; that opposer is the owner of two registrations, Nos.
1911590 and 2204080 for SMART ONES; that since prior to
applicant’s claimed date of first use opposer has used the
mark SMART ONES for pizza products; that applicant’s mark
SMARTPIZZA for pizza is confusingly similar to opposer’s
SMART ONES trademark; and that applicant’s use of SMARTPIZZA
for pizza is likely to cause confusion or to cause mistake
or to deceive purchasers.
In its answer applicant denied the salient allegations
in the notice of opposition, and asserted various
affirmative defenses, including estoppel, waiver and unclean
hands,2 and well as other “defenses” that go to the
likelihood of confusion claim.3 Applicant also
counterclaimed to cancel opposer’s unpleaded registration
No. 1871763, on the ground of fraud, asserting that,
although the registration included the item “pizza,” at the
time opposer filed its Statement of Use on April 8, 1994 in
support of the underlying application, opposer was not using
the mark SMART ONES on pizza, and that opposer did not use

2 Applicant did not pursue these affirmative defenses in its
brief, so we deem them to be waived.
3 To the extent applicant has discussed these “defenses” in its
brief, they are not “affirmative defenses” but relate to the
ground of likelihood of confusion and we have therefore
considered them in that context.

Opposition No. 91159653
3
the mark SMART ONES on pizza before 2002; and that the
portion of opposer’s Statement of Use that it was using the
mark SMART ONES on pizza was false and opposer knew it to be
false.
Opposer answered the counterclaim by denying the
salient allegations, except that it “alleges that the use in
commerce of SMART ONES for pizza commenced on November 30,
1997.” Opposer also stated that it filed a voluntary
surrender of the registration.
In view of the voluntary surrender of the registration,
and the fact that applicant (the counterclaim petitioner)
did not consent to it, on March 28, 2005 the Board granted
the counterclaim and entered judgment against opposer in the
counterclaim. Thus, the only issue before the Board in this
opposition proceeding is that of priority/likelihood of
confusion between opposer’s marks and applicant’s mark.
The case has been fully briefed,4 and both parties were
represented at a hearing before the Board.
The record includes the pleadings; the file of the
opposed application;5 the testimony, with exhibits, of

4 In its brief opposer failed to provide USPQ citations for
certain of the decisions listed in its Table of Authorities.
“When cases are cited in a brief, the case citation should
include a citation to The United States Patent Quarterly (USPQ),
if the case has appeared in that publication.” TBMP §801.03.
5 It is noted that applicant submitted portions of this file
under a notice of reliance. Because the application file is of
record by operation of the rule, such submission was not
necessary.

Opposition No. 91159653
4
opposer’s witnesses Marion Findlay, an employee of H.J.
Heinz Company and Senior Manager of Consumer Promotions, and
Michael Hsu, Vice President of Meals and Potatoes for Heinz
North America; and the testimony, with exhibits, of
applicant’s witness, Katherine A. McGillivray, applicant’s
category marketing manager. Opposer has submitted, under
notice of reliance, printed materials obtained through a
search of the Lexis/Nexis database; certain of applicant’s
responses to opposer’s requests for admission; certain of
applicant’s responses to opposer’s interrogatories,
including documents that were produced in response to
interrogatories; printouts from the USPTO TTABVUE database
showing the status of two oppositions brought by opposer
against third parties’ applications; and status and title
copies of opposer’s two pleaded registrations, as well as
two additional registrations, all for SMART ONES in typed
form, as follows:6
SMART ONES for “frozen entrees
consisting primarily of chicken, beef,
fish and/or vegetables” (Class 29) and
“frozen entrees consisting primarily of
pasta and/or rice alone or in
combination with other foods” (Class
30);7

6 Although the latter two registrations were not pleaded in the
notice of opposition, applicant has treated them as being of
record, and we therefore deem the notice of opposition to be
amended pursuant to F.R.C.P. 15(b). See p. 3 of applicant’s
trial brief: “The first Notice of Reliance, filed November 14,
2005, makes of record ProMark’s U.S. Trademark Registration No.s
1,911,590, 2,204,080, 2,916,538 and 2,916,539.”
7 Registration No. 1911590, issued August 15, 1995; Section 8 &
15 affidavits accepted and acknowledged; renewed.
Opposition No. 91159653
5

SMART ONES for “frozen desserts
consisting of milk based or milk
substitute based desserts, cakes, pies
and mousses: (Class 30);8

SMART ONES for “pizza” (Class 30);9 and

SMART ONES for “pre-cooked ready-to-eat
frozen bread or wrap having a meat
and/or vegetable filling with or without
cheese” (Class 30).10

Applicant has submitted, under notice of reliance, opposer’s
responses to applicant’s requests for admission and its
responses to certain of applicant’s interrogatories,
including documents products in response to those
interrogatories; certain documents produced by opposer in
response to applicant’s document production request, and
authenticated by opposer in its response to a request for
admission;11 several books (printed publications) having the
word “SMART” in their titles; and copies of 112 third-party
registrations and applications for marks containing the word
or element “SMART” and copies of portions of the

8 Registration No. 2204080, issued November 17, 1998; Section 8
& 15 affidavits accepted and acknowledged.
9 Registration No. 2916538, issued January 4, 2005.
10 Registration No. 2916539, issued January 4, 2005
11 At footnote 7 of its brief, and again in its reply brief,
opposer has objected to search reports that applicant submitted
under its notice of reliance, as constituting hearsay and not
having been properly authenticated. However, they were
authenticated by opposer’s response to Applicant’s Request for
Admission No. 48. Thus, the search reports are properly of
record for whatever probative value they may have. As such, they
are proof that the various marks were listed on the search
reports, but not proof that the registrations are subsisting or
the marks shown therein are in use.
Opposition No. 91159653
6
registration files for two of opposer’s registrations
(official records).
During its rebuttal testimony period opposer submitted
a supplemental notice of reliance consisting of dictionary
definitions of the word “pizza”; third-party registrations
for marks containing the word “pizza” for goods which
include the word “pizza” in their identification, and which
include a disclaimer of “pizza”; and a copy of an
application for the mark SMART PIZZA filed by a third party.
Opposer states that these materials are to rebut applicant’s
evidence of third-party registration and use of SMART marks
and thereby show that SMART is the origin-indicating part of
applicant’s mark. Applicant has objected to this evidence
as being improper rebuttal. We overrule the objection.
Applicant has asserted, based on its evidence of third-party
registration and use, that SMART is a descriptive term that
should be given no more importance that PIZZA, and opposer’s
evidence is therefore appropriate rebuttal.
We add that even if we did not consider this evidence,
it would not affect our decision herein. There can be no
doubt that “pizza” is a generic term. Both opposer and
applicant have identified their goods as “pizza” in their
respective registration and application, and both have used
“pizza” generically in the advertising and promotional
materials they have made of record. Their witnesses have
Opposition No. 91159653
7
also referred to their products as “pizza.” Further, even
if the dictionary definitions were not of record, the Board
may still take judicial notice of them. University of Notre
Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213
USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983). As for the third-party application file,
applicant argues that because opposer submitted it during
the rebuttal testimony period, applicant was precluded from
submitting evidence regarding applicant’s protest of this
application. However, a third-party application is
probative only to show that the application was filed.
Thus, applicant can suffer no prejudice by not being able to
submit evidence regarding its own activities with respect to
the application.
Applicant has also objected, on the ground of hearsay,
to Exhibits 60 and 61, which were introduced with the
testimony of opposer’s witness Michael Hsu. These exhibits
purport to show gross sales, broken down by item, for
opposer’s SMART ONES products, for FY 1998 (exhibit 60) and
FY 1999-2004 (Exhibit 61). We overrule this objection. Mr.
Hsu testified that these exhibits report information taken
from Heinz’s “data warehouse which is built off our internal
sales records,” test., p. 21, and answered affirmatively the
question as to whether “these sales records are maintained
by Heinz in the ordinary course of business” test., p. 18.
Opposition No. 91159653
8
Although opposer’s attorney could have elicited more details
from Mr. Hsu regarding how the summaries shown in exhibits
60 and 61 were obtained, we consider the testimony
sufficient to show that the underlying data is part of
Heinz’s records kept in the ordinary course of business, and
that the exhibits are a summary of that information. In any
event, Ms. Findlay testified as to the general dollar sales
for the last five years for SMART ONES products in general
and for SMART ONES pizza products, so even if we did not
consider the detailed breakdown shown in exhibits 60 and 61,
it would not affect our decision herein because the record
still reflects that opposer has made extensive sales of its
SMART ONES products.12 It also appears that applicant’s
purpose in challenging this evidence relates to the issue of
priority. Applicant asserts that the “documents do not show
widespread national use of the SMART ONES mark on pizza
products before Schwan’s date of first use,” brief, p. 17.
However, as discussed infra, opposer is not required to
prove common law rights for pizza because it owns a

12 We note that during Ms. Findlay’s testimony deposition
applicant raised certain objections to her testimony, but these
objections were not maintained by applicant in its trial brief,
so they are deemed waived. Applicant has also asserted that
there are inconsistencies in the numbers provided by Ms. Findlay
and Mr. Hsu. However, the only inconsistency is that Ms. Findlay
at one point in her testimony (p. 20) apparently confused the
numbers for the dollar sales of SMART ONES pizza with the case
sales. Shortly thereafter she referred to the dollar and case
sales of the pizza (p. 28), and these figures and those Mr. Hsu
testified to are substantially the same.

Opposition No. 91159653
9
registration for SMART ONES for pizza. Thus, even if we did
not consider the specific figures set forth in Exhibits 60
and 61, it would not affect our decision on the issue of
priority.
Finally, we note that opposer, at footnote 2 of its
reply brief, reiterates an objection that it had raised
during Ms. McGillivray’s testimony deposition. We have
given this objection no consideration. While a party must
reiterate an objection in its brief or it will be deemed to
be waived, by waiting until its reply brief to reiterate its
objection opposer has afforded applicant no opportunity to
respond.
The record shows that opposer, which is a wholly-owned
subsidiary of the H.J. Heinz Company, is the owner of the
above-listed registrations, and that opposer has licensed
the use of the mark to Heinz North America, which uses it as
part of its Weight Watchers International group. Because
Heinz is the only user of the mark, unless otherwise noted,
hereafter our references to opposer’s activities with
respect to use and promotion of the mark refer to Heinz’s
activities. Opposer began using the mark SMART ONES in 1992
for a line of frozen food products targeted to individuals
who are committed to a healthy life style. The mark WEIGHT
WATCHERS also prominently appears on the packaging for the
products. The mark is currently used for a complete line of
Opposition No. 91159653
10
food items--entrees, “bowls,” pizza, sandwiches, desserts
and breakfasts. The SMART ONES products have two price
points. The Bistro Selections group is the higher-tier
line, with a price point of $3.19, while the lower tier
price point is from $2.59-$2.99.
Opposer began using the SMART ONES mark for frozen
pizza in November 1997, in both its high-tier and lower-tier
line. It sells a variety of pizzas, including cheese,
vegetable, sausage and pepperoni. The goods are sold
primarily through grocery stores, including chain stores
such as Safeway and Kroger’s, and independents such as
Wegman’s and Giant Eagle. Twenty percent are sold in mass
market stores such as Wal-Mart and Super Target, with the
remaining 1-2% in club stores such as Costco.13
Opposer advertises its SMART ONES products through
television, with spot ads on both network and cable
television, in particular on ESPN and ABC in connection with
opposer’s sponsorship of the U.S. Figure Skating Association
and Skate America. Opposer also promotes the brand through
Internet, direct mail and in-store advertising, and in print
media, in particular, through free-standing inserts, which

13 Opposer’s sales figures were designated as confidential, so we
will not set them out in this opinion.

Opposition No. 91159653
11
are coupon supplements in newspapers. A substantial amount
of money is spent each year for coupon redemption.14
Applicant uses SMARTPIZZA as a trademark for frozen
pizza that is sold in the school food service market. It
began using the mark on February 23, 2001, and promotes the
product as being healthier than other pizza products, e.g.,
lower in fat and sodium, and higher in fiber. The product
is bought by school food service directors, and school
children in grades kindergarten to 12 are the ultimate
consumers. The pizza is typically served as part of an
entire meal, which may cost in the $1.50 range; it may also
be offered a la carte as a snack item. Applicant advertises
to food services directors, including through emails and at
trade shows; applicant also produces posters which can be
found in school cafeterias and be seen by the students, and
nutrition fact sheets that may be given to students and
their parents. About 2000 posters were printed in 2004, and
at least 10,000 sheets were given out at a trade show in
2005. Schools may also place applicant’s SMART PIZZA mark
on the menus which are made available to the students and
their parents.15

14 Again, opposer’s advertising and promotion figures were marked
confidential.
15 Applicant has marked its sales and advertising figures as
confidential.

Opposition No. 91159653
12
In view of the fact that status and title copies of
opposer’s four registrations, as set forth above, are of
record, priority is not in issue. King Candy Company v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). Applicant contends that opposer “does not have
a prior federal registration for pizza, and must prove
common law use prior to Schwan’s registration date.” Brief,
p. 15. This statement is incorrect. First, applicant does
not have a registration. Second, it is apparently
applicant’s belief that the filing date of the application
maturing into opposer’s registration must predate any use
made by the applicant. See footnote 4 of applicant’s brief,
at p. 34. (“the registration would only grant rights back to
the filing date, which is after Schwan’s filing and first
use dates”). However, as the King Candy case states, if the
opposer owns a registration, priority is not in issue. In
any event, the record shows that opposer began using the
mark SMART ONES in 1992 for frozen food products, and
specifically for frozen pizza in November 1997, prior to
applicant’s first use in 2001.
This brings us to the issue of likelihood of confusion.
Our determination of this issue is based on an analysis of
all of the probative facts in evidence that are relevant to
the factors set forth in In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In
Opposition No. 91159653
13
re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003).
We turn first to the du Pont factor of the similarity
of the goods. Here the goods, which are identified as
“pizza” in opposer’s registration No. 2916538 and in
applicant’s application, are legally identical. Thus, they
must be deemed to be sold in the same channels of trade and
to the same purchasers. We note that at present applicant’s
goods are, in fact, sold only in the school food service
market. However, “the question of registrability of an
applicant's mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant's goods, the particular
channels of trade or the class of purchasers to which sales
of the goods are directed.” Octocom Systems Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990). See also, Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987). In addition, opposer also has
registrations for and uses its SMART ONES mark on other
closely related goods to pizza, including such Italian meal
entrees as chicken fettuccine and shrimp marinara. The du
Pont factors of the similarity of goods and channels of
trade thus favor opposer.
Opposition No. 91159653
14
In addition, the factor of the conditions of purchase
favors opposer. Pizza is a rather inexpensive food item
that is bought by the general public. Opposer’s boxes of
frozen pizza retail in the $3.00 range, which is
inexpensive, and may be purchased on impulse. Although
opposer’s target customer is a person who is interested in a
healthy lifestyle, pizza may be purchased by anyone,
including people who will not necessarily examine the box to
determine how healthful the product is. Applicant’s pizza
is currently bought by school districts for use in school
cafeterias, so presumably the purchasers of applicant’s
product are more sophisticated and discriminating
purchasers. However, because, as we have already stated,
applicant’s identification of goods contains no limitations
as to channels of trade and types of purchasers, we must
deem applicant’s pizza to be sold through all channels
appropriate for such goods, and to all appropriate
purchasers. Thus, we must treat applicant’s goods as items
that can be bought by the general public as an impulse
purchase.
We next consider the du Pont factor of the similarity
of the marks. In considering this factor, we must also
consider the factors of the strength of opposer’s mark, and
the evidence of third-party use because all three factors
are heavily interrelated. We are presented with an
Opposition No. 91159653
15
interesting situation in that, while there is evidence that
opposer has a strong mark, the word SMART, which is the
element that is common to opposer’s and applicant’s mark, is
a highly suggestive term.
With respect to the strength of opposer’s mark, we are
somewhat hampered in our discussion of this factor because
opposer has marked its sales and advertising figures as
confidential. We can say that opposer’s sales of its SMART
ONES products over the past five years, and its expenditures
for advertising and promoting the products, are substantial,
and are sufficient to demonstrate that opposer’s mark SMART
ONES is a strong mark for prepared frozen foods. We point
out, though, that opposer does not claim that its mark is
famous. Opposer did not plead that its mark is famous and
in its brief opposer claimed only that its mark is a “strong
mark.” The Board confirmed at the oral hearing that opposer
does not assert that its mark is famous. Thus, while we
consider opposer’s mark to be a strong one, it does not
deserve the expanded scope of protection that is accorded to
a famous mark. Compare, Kenner Parker Toys Inc. v. Rose Art
Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir.
1992).
Although the evidence shows that the entire mark, SMART
ONES, has achieved a degree of strength, at the same time we
recognize that the word SMART has a highly suggestive
Opposition No. 91159653
16
significance. Applicant has made of record an extremely
large number of third-party registrations for marks
containing the word SMART for food products. For example,
Registration No. 2597933 is for SMARTWRAP for “meat, poultry
and/or beans filled together with additional ingredients and
rolled inside a tortilla; Registration No. 1367966 is for
SMARTFOOD for popcorn; Registration No. 1462095 is for SMART
CUTS (CUTS disclaimed) for poultry; and Registration No.
1675998 is for SMARTBURGER for meat. These registrations
are not evidence that the marks shown therein are in use, or
that the public is familiar with them. In re Albert Trostel
& Sons Co., 29 USPQ2d 1783 (TTAB 1993). However,
third-party registrations may be used in the manner of
dictionary definitions, to show that a term has a particular
significance or meaning within an industry. See Tektronix,
Inc. v. Daktronics, Inc., 187 USPQ 585 (TTAB 1975). The
large number of registered marks containing the word SMART
for food products is evidence that SMART is a highly
suggestive term for such goods. This suggestive meaning is
further supported by the excerpts of various books applicant
submitted, with titles such as THE EVERYTHING SMART
NUTRITION MINI BOOK, with the subtitle “What’s healthy,
what’s not...the best food for you and your family”
(Applicant’s notice of reliance exhibit 39); EAT SMART Diet
and Nutrition Guide (Exhibit 40); FOOD SMART!, with the
Opposition No. 91159653
17
surtitle “Eat Your Way to Better Health” (exhibit 41); THE
SMART BAKING COOKBOOK, with the subtitle “More than 180
recipes for heavenly, healthful eating” (exhibit 43).16 In
fact, even opposer admits that “the term SMART suggests a
healthier, better-for-you food product.” Brief, p. 19.17

16 Applicant not only submitted copies of excerpts of these books
under its notice of reliance, but the book titles were also
identified by applicant’s witness, Ms. McGillivray, at her
deposition, as resulting from searches of Amazon.com and
ebay.com. Opposer has made several criticisms of the exhibits,
including that Ms. McGillivray did not also conduct searches
using the Yahoo! and Google search engines. Such a criticism is
simply not valid. Opposer could have done searches of other
websites or used its preferred search engines and submitted such
evidence in rebuttal if it believed that doing so would discredit
the validity of Ms. McGillivray’s search. In any event, the
excerpts were properly submitted by applicant under notice of
reliance pursuant to Trademark Rule 2.122(e) as printed
publications, which are self-authenticating. Moreover, the
exhibits submitted by Ms. McGillivray were authenticated by her
as being the results of searches she had undertaken. Although
neither Ms. McGillivray’s searches nor the printed publications
themselves show the extent of exposure of the books to the
public, they are competent to show the manner in which SMART is
used by the authors and would be understood by the
readers/purchasers of the books.
17 Throughout its brief, applicant generally claims that the word
SMART is descriptive of healthful food products. For example,
applicant states, as a topic heading, “Consumers Have an Existing
Awareness that the Term “Smart’ on Food Products Describes
Healthy, Good-For-You Goods and Services.” Brief, p. 9.
However, the evidence of record does not establish that “SMART”
is merely descriptive of food products, but is only highly
suggestive. This evidence includes third-party registrations for
“SMART” marks submitted by applicant, in which a descriptive or
generic word combined with “SMART” is disclaimed, but the word
SMART is not, thus indicating that the USPTO views “SMART” as the
distinctive element that “carries” the mark. See, for example,
Registration No. 2947154 for SMART CHICKEN, with CHICKEN
disclaimed, for poultry; Registration No. 2926666 for GREAT TASTE
SMART SNACK and design, with GREAT TASTE and SNACK disclaimed,
for potato chips and tortilla chips; and Registration No. 2107921
for SNACK SMART, with SNACK disclaimed, for, inter alia, snack
cakes, crackers and granola bars.

Opposition No. 91159653
18
In addition, applicant has submitted evidence of third-
party use of a number of “SMART” marks. They include START
SMART cereal from KELLOGG’S; SMART POP! for ORVILLE
REDENBACHER’S popping corn; SMART BALANCE for both a buttery
spread and popcorn; Q-SMART for a snack bar by The Quaker
Oats Company; HEALTH SMART for ice cream; SMART DELI for
ham-flavored meatless slices; SMART BACON for a meatless
product; and SMART DOGS! for meatless franks. The latter
three products all have the same house mark, LIGHTLIFE, but
the other brands all reflect separate sources for the
goods.18
The number of third-party uses of SMART marks suggests
that consumers are able to distinguish between different
SMART marks based on relatively small differences in the
marks.19

18 These exhibits were made of record during the testimony
deposition of Ms. McGillivray. In its brief applicant states
that “these same products were purchased by counsel of record at
a third grocery store on October 27, 2005, and again made of
record in the deposition of Mr. Hsu and Ms. Findlay.” Brief, p.
10. Information about counsel’s purchasing goods is not in the
record and has not been considered, although we have considered
the testimony of the witnesses as to whether they had seen the
products before.
19 Opposer argues that applicant provided no information about the
extent of sales of these third-party products, but even opposer’s
witnesses testified that they were aware of some of them.
Opposer also argues that the third-party “SMART” marks are for
goods other than frozen pizza, and are therefore irrelevant.
However, they are relevant to show whether consumers can
distinguish among “SMART” marks for food products. Moreover,
much of the evidence regarding the strength of opposer’s SMART
ONES mark derives from its use and advertising for food products
other than pizza. Opposer cannot rely on these activities for
its non-pizza products and at the same time claim that third-
party use of marks for non-pizza food products is irrelevant.
Opposition No. 91159653
19
We must thus decide, as we compare opposer’s mark SMART
ONES with applicant’s mark SMARTPIZZA, what role these
competing considerations should have. It is obvious that,
despite the strength of opposer’s mark, opposer does not
have exclusive rights to the word SMART, and the protection
to be accorded to SMART ONES does not extend to prevent
others from using any marks that have the word SMART. On
the other hand, applicant’s mark consists solely of the word
SMART, combined with PIZZA, the generic name of the goods,
which applicant itself has identified as “pizza.” In the
case of the various third-party uses of SMART marks made of
record by applicant, each combines SMART with another word
that consumers can use to distinguish the marks, e.g., SMART
with START in SMART START, SMART with BALANCE in SMART
BALANCE.20 But the generic word PIZZA added to SMART does
not provide such a distinguishing feature. That is, because
PIZZA is the generic term for the goods, consumers will view
applicant’s mark as being essentially the word SMART, with
the generic name of the goods added to it. In saying this,
we recognize that we must compare the marks in their
entireties, but it is a well-established principle that, in
articulating reasons for reaching a conclusion on the issue

20 We note that there are third-party uses of SMART BACON and
SMART DOG! that, at first blush, appear to be the word SMART
combined with a generic term. However, the goods involved are
not bacon or hot dogs, but are meatless products. As a result,
BACON and DOG are not generic terms for those goods.
Opposition No. 91159653
20
of likelihood of confusion, there is nothing improper in
stating that, for rational reasons, more or less weight has
been given to a particular feature of a mark, provided the
ultimate conclusion rests on a consideration of the marks in
their entireties. In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). A generic term, by
definition, has no source-indicating value. Moreover,
applicant emphasizes the “SMART” portion of its mark in its
promotional materials. For example, Bates No. SP00031 has
the prominent headline “SWITCH TO SMART” (emphasis in
original), and uses the phrase “Consider the SMART Choice!”
(emphasis in original).21
We also consider that when marks would appear on
virtually identical goods or services, the degree of
similarity necessary to support a conclusion of likely
confusion declines. Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.

21 Applicant asserts that “the fact that SMARTPIZZA comprises two
descriptive terms does not impart additional brand significance
to ‘smart’.” Brief, p. 27. It appears to be applicant’s
position that its mark consists of two descriptive terms, and
that SMART would not be the dominant part of its mark. Aside
from the oddness of this claim, with applicant essentially
admitting that its mark is merely descriptive, we are not
persuaded that SMART has lesser or the same significance as PIZZA
in the mark SMARTPIZZA. As we have already stated, the evidence
of record does not establish that the word SMART is descriptive
of food products. Further, the word PIZZA is not just
descriptive of applicant’s goods, but is the generic name of
them. Thus, SMART is the source-identifying portion of
applicant’s mark, and must be given greater weight when the marks
are compared.

Opposition No. 91159653
21
Cir. 1992). Given that opposer’s and applicant’s goods are
identical, and despite the specific differences in the marks
caused by the word ONES in opposer’s mark and PIZZA in
applicant’s mark, we find that the additional generic term
PIZZA in applicant’s mark SMARTPIZZA is simply insufficient
to distinguish this SMART mark from opposer’s SMART ONES
mark.
Accordingly, although the du Pont factor of the number
of similar third-party marks in use favors applicant,
overall the factor of the similarity of the marks tends to
favor opposer.22 We also must take into consideration that
applicant could, based on its identification of “pizza,” use
its mark on frozen pizza similar to opposer’s, and both
parties’ products might be found next to or near each other
in supermarket freezers. Because the goods can be purchased
on impulse, a consumer might well see the word SMART and
“grab” applicant’s SMARTPIZZA box thinking that it was
opposer’s SMART ONES pizza, or vice versa.
The next du Pont factor we consider is that of the lack
of instances of actual confusion. We do not give this
factor much weight in this case, because applicant sells its
goods in a limited channel of trade, to school districts

22 In reaching this conclusion we have considered but reject
opposer’s position that SMART is the dominant part of its mark;
rather, we think that consumers will view the mark as SMART ONES,
and therefore we have given equal weight to both elements in the
mark.
Opposition No. 91159653
22
which then heat and serve the pizza to school children.
Because of the current differences in actual channels of
trade, the relatively limited length of time applicant has
used its mark, and the fact that evidence of actual
confusion is generally notoriously difficult to obtain, we
cannot conclude from the lack of evidence of actual
confusion that confusion is not likely. Thus, we treat this
du Pont factor as neutral.23
The only other du Pont factor on which there has been
evidence and/or argument is that of the extent of potential
confusion. Opposer’s arguments with respect to this factor
revolve around its investment in its mark, and “the
potential of harm to the SMART ONE [sic] mark” if applicant
were to expand its channel of trade to retail supermarkets.
Brief, p. 31. Although the amount of opposer’s investment
is not directly relevant to this factor, we agree that
because pizza is a general consumer item that can be bought

23 Applicant has argued, in connection with this factor, that
neither its application was refused by the Trademark Examining
Attorney on the basis of opposer’s prior registration for SMART
ONES for pizza, nor was opposer’s application for SMART ONES for
pizza, which matured into Registration No. 2916538, refused on
the basis of applicant’s prior pending application. Applicant
would apparently have us draw some conclusion about likelihood of
confusion between the parties’ marks based on what Examining
Attorneys did when they examined the respective applications.
However, the actions of Examining Attorneys have no relevance in
this context. If we were to be guided by an Examining Attorney’s
conclusion about likelihood of confusion, there would be no point
in having an opposition proceeding. Suffice it to say that it is
the responsibility of the Board to determine the issue of
likelihood of confusion based on the entire record adduced during
Opposition No. 91159653
23
by virtually everyone, if applicant were to sell pizza under
the mark SMARTPIZZA there is the potential to confuse a
large number of people. Therefore, this factor favors
opposer.
Accordingly, although we reiterate that opposer is not
entitled to protection against the registration of any and
all marks containing the word SMART for food products, here
we find that a consideration of all the relevant du Pont
factors favors a finding of likelihood of confusion. To the
extent that there is any doubt on this issue, it is well
established that such doubt must be resolved in favor of the
registrant and prior user. Formica Corporation v. The
Newman Corporation, 158 USPQ 104 (CCPA 1968).
Decision: The opposition is sustained.

the opposition proceeding, which record is substantially larger
than the evidence the Examining Attorneys considered.